Ameristar Fence Products, Inc.

Trademark Trial and Appeal Board

Mar 19, 2012

No. 77955361 (T.T.A.B. Mar. 19, 2012)

Mailed: March 19, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ameristar Fence Products, Inc.
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Serial Nos. 77955361 and 779553661
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Gary S. Peterson of Tomlinson & O’Connell PC for Ameristar
Fence Products, Inc.

David Yontef, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Zervas, Kuhlke and Shaw, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On March 10, 2010, Ameristar Fence Products, Inc.
applied to register the stylized mark 2 and the standard
character mark 3 on the Principal Register under Section
1(a) of the Trademark Act, 15 U.S.C. §1052(a), for goods
ultimately identified as “metal fences and gates and

1 These proceedings were consolidated by Board order on August
17, 2011.

2 Application Serial No. 77955361, claiming March 9, 2010, as the
date of first use and first use in commerce.

3 Application Serial No. 77955366, claiming March 9, 2010, as the
date of first use and first use in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial Nos. 77955361 and 77955366
2
structural component parts thereof for ranching use” in
International Class 6.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified goods, so
resembles the registered mark for “steel in the form
of metal powder and compacted metal powder and wrought
products, namely wire, rod, bar, strip, billet, and other
shapes,” in International Class 6, as to be likely to cause
confusion, mistake or deception.4
When there is a question of likelihood of confusion,
we analyze the facts as they relate to the relevant factors
set out in In re E. I. Du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
While we will address the factor of the similarity of
the marks, infra, the key issue in this case is how to read

4 Registration No. 2837897, issued May 4, 2004, Sections 8 and 15
declarations accepted and acknowledged.
Serial Nos. 77955361 and 77955366
3
the registrant’s identification of goods and based on that
understanding determine whether the goods, channels of
trade and potential customers are related in such a manner
that confusion is likely. The interpretation of the
identification is critical because, in considering the
goods, we must evaluate the relatedness of the goods as
they are identified in the registration and application.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See
also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
The examining attorney contends that registrant’s
identification of goods encompasses applicant’s goods.
Specifically, he argues that:
The goods associated with the cited registration
are identified as “steel in the form of metal
powder and compacted metal powder and wrought
products, namely wire, rod, bar, strip, billet,
and other shapes”. [Emphasis added]. Contrary to
Applicant’s limited interpretation of this
description, these products are identified
broadly and are not restricted to unmanufactured
raw materials. Therefore, it is presumed that
the application encompasses all goods of the type
described, including wrought fence and gate
products made of steel such as wires, posts, bars
and rails, which are undeniably commercially-
related to Applicant’s goods and move in the same
channels of trade to the same consumers.

Ex. Att. Br. p. 7.

Serial Nos. 77955361 and 77955366
4
In addition, the examining attorney points to the
definitions of the words wrought, shape, wire and post5 and
from them concludes that:
Based on these definitions, the “wrought
products, namely wire, rod, bar, strip, billet,
and other shapes” covered by the registered mark
include steel wire fences, steel posts for fences
and gates and other manufactured products for
metal fences and gates. Moreover, contrary to
Applicant’s assertion, the registered goods must
not be “construed to cover only shapes similar to
the five listed solid steel mill products.”

Ex. Att. Br. p. 8.

We do not agree with the examining attorney’s
interpretation of the scope of the identification of goods
listed in the registration, “steel in the form of metal
powder and compacted metal powder and wrought products,
namely wire, rod, bar, strip, billet, and other shapes.”
This identification, clearly and unambiguously does not

5 Wrought: 3. processed for use; manufactured. Shape: form,
create; especially: to give a particular form or shape to.
Merriam-Webster’s Collegiate Dictionary (10th ed. 2000). The
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983) (Board may take judicial notice of dictionary
definitions).

Wire: fencing; fence of usually barbed wire. Post: a strong
thick pole made of wood or metal that is put upright in the
ground, used as part of a fence, gate, etc. Final Office Action
mailed January 31, 2001, respectively, Merriam-Website Online
Dictionary 2011 and MacMillan Online Dictionary 2011.

Serial Nos. 77955361 and 77955366
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include finished products, such as fencing or fence posts,
made of steel. Taken as a whole, registrant’s
identification is not so open-ended to include finished
products, such as fencing and structural component parts
thereof. The wording, “steel in the form of” clearly
limits “and other shapes” to steel products used as raw
materials for further manufacture into end products. The
examining attorney’s contention that “wire” in this
identification would include “barbed wire” or “fencing
wire,” simply does not comport with the common
understanding of that term in the steel industry and as
used in registrant’s identification of goods, as
demonstrated by the record. See, e.g., App. Recon. Exhibit
7 (United States International Trade Commission Report on
Steel Consuming Industry 2003). The wire referred to in
the context of this identification does not encompass an
end use product. Rather, it is in a form that would only
be sold to a steel fabricator for further processing into
an end use product. Id.
The identification is clearly limited to raw steel
products for use in the manufacture of other products. Not
that it is necessary, but, registrant’s website
corroborates this interpretation wherein it states that it
is “a leading manufacturer and distributor of specialty
Serial Nos. 77955361 and 77955366
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alloys, including stainless steel and titanium.” App.
Recon. Exhibit 5.
Thus, the questions are (1) whether applicant’s metal
fencing for ranching use is commercially related to
registrant’s steel in raw material form, (2) whether the
goods travel in the same channels of trade, and (3) whether
they are purchased by the same classes of customers.
In support of his position, the examining attorney
submitted 48 third-party registrations and excerpts from 12
third-party websites. The bulk of this evidence, at best,
does not support his position, and at worst, undercuts his
position in that they show only evidence of end use steel
products, such as fencing, and do not include registrant’s
goods. This is not surprising given the structure of the
industry where steel mills forge and extrude the steel
shapes, steel distributors broker with fabricators who
further manufacture the wire, rod or billet into end use
products for as many fields of use as can be imagined.
There are a handful of registrations that include “fencing”
and some of registrant’s goods (see, e.g., Reg. No. 2061006
for, inter alia, “steel in sheet, rod, billet form” and
“metal fence posts”); however, given the structure of this
industry, as reflected in the evidence of record regarding
the steel industry, see, e.g., App. Recon. Exhibit 7, the
Serial Nos. 77955361 and 77955366
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way in which steel raw material is sold, and the number of
third-party registrations that pointedly do not include
both registrant’s and applicants’ goods, we do not find
these third-party registrations probative on this issue.
If anything, the majority of the third-party registrations
reveal the distinction between the steel mill/manufacturer
and the steel fabricator that further processes the steel
for some limited end products or for use for further
processing into other end products made of steel.
Moreover, 11 out of the 12 third-party websites are for
retail operations such as Lowe’s, Home Depot and Jim’s
Supply that merely offer manufactured end use steel
products, and certainly not steel in “wire, rod, strip or
billet” shapes. Thus, in considering the respective goods
we find that they are not so related that the use of the
respective marks is likely to cause confusion.
In view of our findings regarding the differences in
the goods, we cannot presume an overlap in trade channels
and, indeed, the record points to the conclusion that the
trade channels do not overlap, other than to the extent a
steel fabricator manufacturing the component parts for a
fence may purchase the steel raw material from a steel
manufacturer such as registrant. See, e.g., App. Recon.
Exhibit 7 (flow diagram in U.S. International Trade
Serial Nos. 77955361 and 77955366
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Commission report on the steel industry) and Exhibit 16 to
(declaration of Keith Armour, applicant’s Vice President).
In that instance, however, the purchasing decision is made
very carefully by sophisticated consumers. See Armour
Dec. Exhibit 16. We further note that even if we relied on
those third-party registrations that include both
applicant’s and registrant’s goods as sufficient to find
the goods to be related, the only overlapping trade channel
would still be at the level of purchasing a raw steel
product inasmuch as registrant’s identification does not
include the end use products. Here, also, the
sophisticated nature of the purchase would obviate likely
confusion. Electronic Design & Sales, Inc. v. Electronic
Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir.
1992); In re N.A.D., Inc., 754 F.2d 996, 224 USPQ 969, 971
(Fed. Cir. 1985); In re Digirad Corp., 45 USPQ2d 1841 (TTAB
1998); In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378,
1380, 1383 (TTAB 2006).
In view thereof, we find that applicant’s goods are
not related to registrant’s goods. Moreover, to the extent
there is any overlap in the channels of trade and classes
of customers, applicant’s goods are sufficiently distinct
from registrant’s goods and would be purchased with
sufficient care to preclude likely confusion. The nature
Serial Nos. 77955361 and 77955366
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of registrant’s goods is such that any potential consumer
would be knowledgeable or discriminating and the purchasing
decision would not be based on impulse but rather would be
subject to a more deliberative process.
We turn now to consider the marks. In determining the
similarity between the marks, we analyze “the marks in
their entireties as to appearance, sound, connotation and
commercial impression.” Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177
USPQ at 567.
Applicant argues that the XH in registrant’s mark is
the dominant element because the 440 in the steel industry
has a descriptive or highly suggestive connotation and,
therefore, the presence of the XH is sufficient to
distinguish the marks. Conversely, the examining attorney
rejects applicant’s evidence on this point and contends
that 440 is the dominant portion of registrant’s mark
because “consumers are more inclined to focus on the first
word, prefix or syllable in any trademark.” Ex. Att. Br.
p. 4.
We find applicant’s evidence probative to show that
the number 440 has a specific meaning in the steel
industry. In support of this contention applicant
Serial Nos. 77955361 and 77955366
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submitted: (1) excerpts from websites wherein registrant’s
product is described as having the “high hardness Type 440C
stainless steel” (see, e.g., App. Response filed on
December 13, 2010, Exhibit B, www.cartech.com); an excerpt
from the Wikipedia website wherein 440 is described as a
type of steel grade originally developed by the American
Iron and Steel Institute (AISI) and followed by the Society
of Automotive Engineers (SAE) that is “one of the hardest
stainless steel” (id., Exhibit C, http://wikipedia.org);
(3) registrant’s U.S. patent for a steel alloy described as
providing “corrosion resistance that is similar to Type
440C alloy” and explaining that “AISI Type 440C alloy has
been used in applications, such as bearings and bearing
races,” (id., Exhibit D); (4) a technical data sheet for
registrant’s goods describing it as having the “high
hardness 440C stainless steel” (App. Req. for Recon. filed
on May 18, 2011, Exhibit 4); (5) the Handbook of Stainless
Steels (McGraw Hill 1977) (id., Exhibit 13); and (6) the
index of the Society of Automotive Engineers standards for
metals and alloys (9th ed. 2001) (id. Exhibit 14).
Thus, the common element is the weaker portion of
registrant’s mark. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (It is well
settled that one feature of a mark may be more significant
Serial Nos. 77955361 and 77955366
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than another, and it is not improper to give more weight to
this dominant feature when evaluating the similarities of
the marks.) That being said, the XH is not particularly
distinctive and is subordinate to the 440 in that it
appears as a specific designation under the 440 category
and to that extent applicant’s mark could appear as another
variant in registrant’s line of goods if applicant’s goods
were related. However, we must consider this factor in the
context of the respective goods. With regard to
applicant’s fencing for ranching use, applicant contends
and the examining attorney does not dispute, that “[i]f
‘440’ means anything at all to these customers, it merely
evokes the equestrian context of the 440-yard quarter horse
racing event. Such agricultural customers would not
associate ‘440’ with a specialty steel of any kind...”
App. Br. p. 2.
Thus, the dissimilarities in connotation and overall
commercial impression engendered by the differences in the
goods outweighs the similarities in sound and appearance.
Coach Services Inc. v. Triumph Learning LLC, 96 USPQ2d 1600
(TTAB 2010), aff’d and remanded on different issue, __ F.3d
__, 101 USPQ2d 1713 (Fed. Cir. 2012); In re Sears, Roebuck
and Co., 2 USPQ2d 1312 (TTAB 1987); In re British Bulldog,
Serial Nos. 77955361 and 77955366
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Ltd., 224 USPQ 854 (TTAB 1984); and In re Sydel Lingerie
Co., Ltd., 197 USPQ 629 (TTAB 1977).
In conclusion, we find that because the marks are
dissimilar, the goods are not related, and to the extent
the channels of trade overlap at the manufacturing level,
registrant’s goods are subject to careful purchasing by
sophisticated purchasers, confusion is not likely between
applicant’s mark for its identified goods and the mark in
the cited registration.
Decision: The refusal to register under Section
2(d) of the Trademark Act is reversed.